Collision Course: What Can We Learn From Uber's 'Otto' Trademark Problem?

Forbes bericht: "[...] The pleadings in the court case make clear that the plaintiff says it not only filed its trademark application before Ottomoto, but is claiming that it actually used the mark continuously, without interruption, since it first introduced the “Otto” product at the RoboBusiness 2015 conference in San Jose, California. According to Clearpath, Ottomotto is now using its trademarks in the United States in a similar manner, and claims that the press and potential customers have already been confused. They asked the court to stop Ottomotto’s use of this trademark. How Ottomotto is currently using the trademark is not explained the complaint, but they must be, since you cannot ordinarily be sued simply for filing an intent to use trademark application if you do not also have actual use. (Intention to use is not against the law.) [...]

On the other hand, trademark rights do not exist in words alone. They exist in words or symbols only as they are used to identify particular products and services. One defense which Ottomotto will undoubtedly raise in this case is that relevant consumers of those two companies are different, and are highly unlikely to (they will argue) be confused. The fact that the complaint says some people already have been confused may or may not be relevant; that will be up to court to decide.

It is highly possible — maybe even likely — Ottomotto and its lawyers knew everything there was to learn about the Clearpath products and decided to move forward because they concluded that there was no legal conflict. These types of decisions are made every day, along with the associated decision to assume the risk — whatever that may be. The proposed mark could be important enough to fight for. The applicant may have confidence that it can win such a fight if it emerges. That calculated risk is one which is much easier to take if you have the financial backing of Uber and can absorb an ongoing stream of six-figure hits for legal fees while you battle it out in the federal courts.

If your enterprise is unable or unwilling to fund this type of dispute then the legal question of whether you believe you can win the fight is less important than the practical question of whether you can afford to find yourself in a fight. You must ask yourself whether any potential new mark is so critical to your company’s success that you are prepared to fight for the right to use a trademark your customers do not yet even know exists. Sometimes, it is better to get away from your lawyers, and go back to the drawing board."

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